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priority claim

August 31, 2016

In July 2012, Israel enacted legislation facilitating publication of patent applications 18 months after the earliest priority date. Unlike in the USA, where the move to 18-month publication did not have retroactive effect, in Israel the decision was that all pending applications would be laid open to the public 18 months after the earliest priority date. No opt-out for already-filed applications was provided, nor was there the possibility for filing a new application with a non-publication request. The only provision for preventing publication of one’s application was, and remains, to abandon the application before publication occurs.

“Publication” in this context doesn’t really mean publication in the sense of the ILPTO printing up a document. What it means is that on or shortly before the last day of the calendar month in which the 18-month date falls, the ILTPO publishes its Patents Journal online, which lists newly publicly-accessible applications. Simultaneously with publication of the Journal, the application file as it appears in the ILPTO’s public database is made accessible. Thus preventing public access to an abandoned application doesn’t really require much work on the ILPTO’s part, and abandonment should be possible relatively close to the date of publication, since all that needs to happen is for the application file to remain invisible online.

In practice, the ILPTO sends applicants a letter about a month before the scheduled publication, informing them that they have 14 days to abandon the application in order to prevent publication.

Acting pro se, Zamir Tribelsky filed patent application no. 220352 at the ILPTO on June 13, 2012, several weeks before the “we publish all applications” legislation was enacted. Under the law at the time he filed, the application file would only become public at the conclusion of examination, after payment of a publication fee. Even after the statutory amendment took effect, as a new filing with no priority claims, the application was due to be made publicly available in late December 2013, when that month’s Patents Journal published.

On December 2, 2013, the ILPTO sent a letter to Mr. Tribelsky, telling him that the application was scheduled to be made public on December 31, 2013, and that if he wished to prevent its publication, he needed to notify the ILPTO accordingly within 14 days, i.e. by December 16, 2013. Download Tribelsky IL 220352 notice of publication

And despite that letter, on December 31, 2013, the ILPTO published notice of the application in the Patents Journal and opened the file to the public, where it is still visible today.

Mr. Tribelsky is not my client. I’ve no idea if his invention was worth anything, or if his patent application was well-drafted, or, if granted, if it would have provided commercially valuable protection. But I do know through an independent source that Mr. Tribelsky was unaware of the publishing of his abandoned application until long after that publication had occurred. So if he had dreams of re-filing his application at a later date, the Israel PTO destroyed that possibility.

The treatment of Mr. Tribelsky by the Israel PTO contrasts sharply with the image the ILPTO likes to project that it is a truly modern patent office. To hear the ILPTO tell it, it is an office with modern computer systems, including a wonderful e-filing system, so wonderful that everyone except pro se individual applicants are forbidden from filing any other way.

However, the publishing of an abandoned application, contrary to law and contrary to what the ILPTO indicated to the applicant, so as to adversely affect that applicant's rights worldwide, is entirely consistent with the reality of the ILPTO's computer systems. The e-filing system, to put it generously, leaves much to be desired, on many levels. The uploading of documents to the public database, whether those documents were filed by the e-filing system or generated by examiners, is done manually, so that sometimes documents are simply never loaded into the database. The public database itself is subject to manipulation (I had a case last year where a document that was in the database one day was gone the next). And there is no way for filers to view the application files for their own unpublished applications, i.e. there is no corollary to the USPTO's private PAIR.

This is why, notwithstanding my lack of knowledge of the particulars of Mr. Tribelsky's case, if he was my client, I would recommend suing the pants off the ILPTO. Not because he'll get lots of money: although proving negligence on the part of the ILPTO in this case is a slam dunk, putting a monetary figure on the damage caused will be difficult if not impossible. No, I would recommend suing the ILPTO because someone needs to get it through the heads of the higher-ups at the ILPTO that no matter how great the degree of computerization and automation, any system involving people is fallible, and making the ILPTO a defendant in such a suit would most definitely get the ILPTO’s attention, not to mention the attention of the people in the Justice Ministry to whom the ILPTO Commissioner reports. And as a result of that, maybe the higher-ups will realize that redundancy – say, by allowing people to file applications and responses in paper, by fax, as well as through an electronic filing system – is something to be embraced, not eliminated.

March 18, 2016

This is the story of a US patent application that went abandoned and thus shouldn’t have been published, but which the USPTO published nevertheless because of an improper benefit claim, a benefit claim that prima facie was improper but that the USPTO didn’t bother to check.

A well-known feature of the US patent system is the ability to claim the “benefit” of an earlier-filed US application, either a provisional or a non-provisional. This is what gives rise to the ability to file continuation applications ad infinitum. There are only two substantive requirements in claiming the benefit of an earlier US application:

there must be at least one common inventor between the earlier- and later-filed applications, and

there must be at least one day of co-pendency between the applications. See 35 USC §119 and §120.

It’s also well-known that unpublished, abandoned US patent applications remain unpublished, unless they serve as a basis for a benefit claim in a later-filed, subsequently-published application. In such cases, the earlier, abandoned application is supposed to be made available to the public.

But what happens if an improper benefit claim is made in a later-filed application?

USSN 13/010796 was filed January 11, 2011, without fees and without inventors’ declarations. No inventor was named (neither an application data sheet (ADS) nor an application transmittal form was filed), although the EFS acknowledgement form lists one Shmuel Sternklar as the inventor; presumably this name was manually entered when the application was filed via EFS. The title of the application was “METHODS AND SYSTEMS FOR MEASURING THE FREQUENCY RESPONSE AND IMPULSE RESPONSE OF OBJECTS AND MEDIA”. On February 3, 2011, the USPTO mailed a Notice of Missing Parts, asking for the fees and other documentation within two months, but no ADS, fees or declarations were ever filed or paid. This resulted in abandonment of the application, the Notice of Abandonment being mailed in October 2011. Note that the USPTO’s view is that the abandonment was effective as of the date of failure to comply with the Notice of Missing parts, i.e. April 4, 2011.

On March 8, 2011, USSN 13/043,203 was filed. The transmittal form filed at the time listed one inventor, McKelvey, and stated that this application was a CIP of USSN 12/903753. The title of the application was “Integrated read head device”. The body of the application included the requisite statement about benefit claims, including a benefit claim to the aforementioned USSN 13/010796, filed January 11, 2011. On April 25, 2011, a declaration from the sole inventor, Jim McKelvey, was filed, which included several benefit claims, among them a benefit claim to said USSN 13/010796. On May 4, 2011, a filing receipt issued, listing the benefit claims, including the benefit claim to USSN 13/010796. In PAIR, the “continuity data” likewise lists a benefit claim to USSN 13/010796. See the screen shot below. The ‘203 application eventually matured into patent no. 8,573,487, which is assigned to Square, Inc.

It’s clear to anyone with a brain that the benefit claim to USSN 13/010796 is a typo: the ‘796 and ‘203 applications list different inventors, and that alone should have been a red flag for the USPTO. Moreover, the two applications have different titles, different numbers of pages, completely different drawings, and completely different texts. (What was meant instead of USSN 13/010796 may have been 13/010976, also filed on January 11, 2011, and which lists Jim McKelvey as one of the four inventors.)

Unfortunately, brains are a commodity in short supply in many parts of the USPTO. The mismatch between the ‘203 and ‘796 applications was of no concern to the PTO, which clearly didn’t even bother to check the benefit claim, and proceeded to make the file wrapper of the unpublished, abandoned ‘796 application available on public PAIR when the ‘203 application published on April 19, 2012.

Although in the present case, it doesn’t appear that any damage to the ‘796 applicant ensued as a result of the USPTO’s unauthorized publication of that that application (for reasons we don’t go into here), it doesn’t take much imagination to realize the potential damage that can be caused by such unauthorized publication. Suppose, for example, that the inventor of the ‘796 application assumed his application would remain secret, didn’t discuss his invention with anyone, and re-filed the ‘796 application as a new PCT application on April 20, 2012. Thanks to the USPTO, he would have no chance of getting patent at the EPO or in most other countries, because his now-published-despite-being-abandoned ‘796 application became public the day before. That’s absurd, because unauthorized publication could easily have been prevented by the USPTO, had it troubled itself to take a minute to check for the two statutory requirements for a benefit claim, co-pendency and a common inventor.

The USPTO’s dereliction of duty in this case is even more astounding given the USPTO’s predilection for harassing applicants about far more minor issues, such as second-or-later ADSes that are “improperly” marked to show corrections, or the omission of a status identifier from one claim among many in an amendment. Those minor issues have no impact on the potential secrecy of one’s application. As the present case illustrates, however, the abandonment of one’s own application, an application to which that applicant hasn’t made any benefit claim in a subsequent, published application, is no guarantee the USPTO won’t publish the abandoned application. That’s a disconcerting thought for us patent practitioners.

A question worth considering is, Would the result have been different had the applicant expressly abandoned the ‘796 application, rather than just not pay the fees? We don’t know the answer to that one, but the guess is that the answer is no: as long as the follow-on application was filed within one year of the filing of the earlier application, the later application can benefit from the earlier application, even if the earlier application was abandoned.

For the later inventor, McKelvey’s, there are also potential issues. If it was important to receive the benefit claim to whatever application other than the ‘796 application was intended, then the ‘203 applicant has a problem, as it is too late at this stage to make such a benefit claim. But an interesting question also arises with respect to the ‘203 applicant’s duties toward the ‘796 applicant. Ostensibly, the ‘203 applicant had no duties toward the ‘796 applicant. Yet had the ‘203 applicant carefully checked its papers – at the very least, the filing receipt received two months after the filing of the application – it would have discerned that an incorrect benefit claim was being made, and taken corrective steps, before any damage was caused to the ‘796 applicant by the unauthorized publication of that application, thus serving both its own interests in perfecting the correct benefit claim, and the interests of the ‘796 applicant. Certainly, the USPTO and the ‘203 applicant were better positioned than the ‘203 applicant to mitigate the harm before it occurred. Applicants who allow their cases to go abandoned before publication shouldn’t have to check to see if any later applications improperly claim the benefit of the earlier, abandoned case.

September 22, 2014

Suppose you’re an Israeli company with a newly-drafted patent application. You think it’s got an enabling disclosure and clear claims, and it’s not something likely to get flagged as defense-related (which would preclude foreign filing). Where should you file first?

Before the enactment of the AIA, the answer was a no brainer: you file first in the USA, to take advantage of 35 U.S.C. §102(e) during US domestic prosecution. And if getting a quick allowance isn’t critical, you file your application as a provisional rather than a non-provisional, because:

It’s cheap - $130 filing fee for a small entity, versus over $500 to file in Israel (over $300 if you qualify as a small entity under Israel law, but the cost of proving small entity status eats into the savings). In fact, you don't even need to pay the fee to get a filing date for your provisional application - for small surcharge you can pay the fee later. So if you decide not to proceed with the application, you can just not pay the fee.

You get an extra year of patent protection, since the one year that the provisional is alive doesn’t count against the 20-year patent term. True, if you file first in Israel you can re-file the within a year and claim priority from your original Israel filing, but most people don’t do that; and you still wind up paying more than you need to in order to gain the year, see (a) above.

You can file electronically, something you still can’t do in Israel, and if you’re a registered filer you can see your filing on PAIR almost instantly, something you can’t do in Israel either.

When you go to file your PCT application at the end of the priority year, if you file at the International Bureau, WIPO can electronically pick up the priority document, thus precluding the need for you to provide a certified copy yourself. In contrast, if you file first at the Israel PTO, you’ll need to order a certified copy of the priority application and provide that to the PCT Receiving Office when the time comes – even if that PCT RO is the Israel PTO itself.

Filing first in Israel precludes the filing of a non-publication request when you eventually file in the USA.

(Amazingly, these advantages were lost on some local practitioners, who wrote about the benefits of filing first in Israel.)

Post-AIA, with the elimination of §102(e), the first advantage is gone: now under US law, a first filing in any Paris Convention country is equally good for purposes of US prosecution. But I still think that in most cases, it makes sense for Israeli entities to make their first filing a US provisional application, because reasons 1-5 above still apply.

All this assumes, of course, that you file yourself, or with a licensed US practitioner who charges a reasonable fee for this (like yours truly). If you file through a US-based firm that takes $1500 just to file the provisional – and apparently there are such firms – then you’re getting taken to the cleaner’s.

May 27, 2014

Last week the Israel PTO published two more “Commissioner’s circulars” (חוזרי רשם in Hebrew) to add to the burgeoning number of such expressions of ILPTO policy. A jar of Jelly Bellies to anyone who can indicate off the top of their head a complete list of circulars that are currently in force. An extra box of spicy cinnamon jelly beans if you can also tell us which “Commissioner’s notices” (הודעות רשם) are still relevant.

One of the new circulars deals with cases in which an Israel patent application serves as a priority document for another Israel application.

A preliminary note: early in his tenure, the present Commissioner published a “circular on circulars”, in which he said that he would publish drafts of new circulars and allow a comment period (usually two weeks) before finalizing them. He didn’t do that for either of the two new circulars, but that’s nothing new, as many (or most? I haven’t counted) circulars published by the PTO since that time have not been subject to comment beforehand. In the present case, aside from exposing the ILPTO’s hypocrisy in talking a good game about “transparency” but clearly having no idea what the word means, comments beforehand would have spared the ILPTO some embarrassment. To wit:

Since around 1995, the Israel patent statute has allowed an applicant to claim Paris Convention priority from an earlier Israel patent application. Prior to that, priority could only be claimed from a non-Israel application, a rule which in effect penalized Israeli applicants with one year less patent term than foreign entities. Nowadays, the most common situation in which priority to an earlier Israel application is claimed is in the filing of a PCT application: a first application is filed in Israel, a PCT is filed claiming priority from the Israel application, and then a national phase application is filed in Israel. In such situations, a certified copy of the priority application must be submitted to the Receiving Office, so there’s no need to file a copy of the priority application with the ILPTO upon national phase entry. Of course, if the ILPTO is the Receiving Office, the applicant can just indicate on the PCT Request form that the RO should provide a copy of the priority application, and the RO/IL will comply.

Less common is the situation in which a follow-on application is filed directly in Israel at the end of the priority year. The new circular sensibly explains that in such a case, there is no need to provide the ILPTO with a certified copy of the priority document. Well, no need, unless the priority application was abandoned before it was laid open to the public 18 months after filing per section 16A of the statute. If the priority application was abandoned before being made public, the new circular says that the applicant needs to provide the ILPTO with a certified copy of the priority document.

Yes, you read that right: the applicant must provide the ILPTO with the priority documentthat the ILPTO already has in its possession.

What a model of efficiency! Israeli applicants can now order certified, paper copies of their priority documents, which the ILPTO will mail to the applicants, which the applicants can then send back to the ILPTO when filing a follow-on application. Because, you know, it would be too much trouble for the ILPTO to give itself a copy of the priority document.

Keeping in mind that the concept of electronic patent filing remains a foreign one to the ILPTO, the guess here is that the ILPTO doesn’t scan the paper copies of patent applications until close to the 18-month publication date, so that if an application is abandoned before that time, there is no electronic copy of the application available. But I could be wrong about that.

The way the new circular is worded, one can envision several absurd situations arising. For example, if Israel application B is filed within one year of Israel application A, with a priority claim to A, and then A is abandoned after the filing of B but before the 18-month publication date, then apparently the applicant will have to file a paper copy of application A in the file of application B. Why the necessity to file papers in B should be contingent on actions that happen in A, a separate case, after B has already been filed, isn’t immediately clear to this writer or to anyone with whom he has spoken, and the rationale isn’t explained in the circular. If, however, B was a PCT application, then abandoned/pending status of A wouldn’t matter: one could file A in Israel, abandon then next day, then 11 months later file a PCT at the RO/IL claiming priority from Israel application A, and, as noted above, instruct the ILPTO to provide the IB with a copy of the priority document.

By comparison, while the USPTO is far from perfect in its handling of applications, this particular case is another example where the ILPTO would have done well to see how the USPTO does things. One of the nice things about making one’s first filing a US provisional application is that you don’t need to provide the USPTO with a copy of the priority application when subsequently filing a US non-provisional application that claims the benefit of the provisional – you just indicate on the Application Data Sheet that the new application claims the benefit of the provisional. And when filing a PCT application that claims priority from the provisional, it’s easy to tell the US Receiving Office to provide a copy of the priority provisional to WIPO, or to tell the USPTO allow WIPO to obtain a copy of the priority provisional.

I haven’t looked at the numbers, but I suspect that this particular circular will affect a relatively small number of applications. Which makes one wonder why the Commissioner bothered to publish it in the first place, given the maxim “Better to be thought of a fool than to open one’s mouth and remove all doubt”. Perhaps someday the Commissioner will solicit input from people who have actually prepared and filed patent applications before publishing his missives. As his “circular on circulars” asserts is his policy.

July 30, 2012

Following the adoption of significant amendments to the Israel patent statute on July 9 and their coming into force (mostly) on July 12, on July 25 the Israel PTO published a notice concerning the implementation of the amendments. Among other things, the ILPTO plans to make new file histories available online about once a month, coincident with the monthly online publication of the Patents Journal (the equivalent of the USPTO Gazette), as soon as possible after 18 months from an application’s earliest priority date have passed. File histories of already-filed applications will also be made available in this manner, although no more than 4500 old applications will be made available per Journal publication.

The plan is for the ILPTO to notify applicants or their legal representatives that the file history will be made public one month prior to this occurrence; if applicants do not wish for this to happen, they will have a week from notification to inform the ILPTO that the application has been abandoned, in which case the file will not be opened to the public. Realizing that one week to respond is short notice, the ILPTO has indicated that applicants may be informed of impending publication by e-mail and may respond to such notices by email. On the one hand, this represents a step forward for the ILPTO, which still is not set up for electronic filing of patent applications (more on this below); on the other hand, there was no notice or comment period for this new procedure, which undermines statements by the ILPTO that it wants its procedures to be transparent.

Interestingly, and commendably, the notice indicated that the ILPTO has adopted the suggestion made in the previous post on this blog, namely that the ILPTO will not open the files of PCT applications that enter the national phase until those applications have been published by WIPO, i.e. until 18 months from the earliest priority date have passed. (According to the amended statutory wording, the opening of the files in such cases should occur within 45 days of national phase entry, irrespective of the earliest priority date, so that early-entry national phase applications would be made public before 18 months had passed.)

The notice also indicates that, exercising powers conferred on the Registrar by the amended statute, patent applicants filing in Israel will be required to submit a copy of the application on CD-ROM or DVD; the CD or DVD will have to contain separate files for the specification, claims, drawings and sequence listings. Given that the notice shows that the ILPTO now understands that notices of abandonment can be filed electronically, why does it insist on requiring physical copies of patent applications to be delivered to the ILPTO? The practice is prejudicial to applicants and practitioners who live or work far from Jerusalem, since they need to send their applications for filing several hours before Jerusalemites do; it’s environmentally unfriendly because it requires delivery by automobile or motorbike; and it aids countries that aren’t friendly toward Israel that supply the gasoline that powers those vehicles. Why not just let people email in their applications, or set up a designated electronic filing portal?

June 22, 2011

On June 20, the USPTO announced on its web site that it had agreed with the Israel PTO to undertake a pilot Patent Prosecution Highway (PPH) project, beginning July 1, 2011 and continuing until June 30, 2012. Under the project, a patent applicant whose application was first filed in one of the two countries, and for which at least one claim has been found allowable, may request that the other office fast-track a corresponding application in the other country.

As of this writing, the link posted on the USPTO’s site for more information on this project does not contain any country-specific information regarding the program with Israel. However, the Israel PTO site does contain information in English (an explanation of how PPH works in Israel and a form to be filed when making the request), and although this writer wasn’t able to find comparable information in Hebrew from the Hebrew web site’s home page, the Hebrew PPH site is up (as noted in a press release in Hebrew that was sent out via the ILPTO’s email distribution list earlier today).

Some noteworthy points about utilization of the PPH before the ILPTO:

First, according to the information on the ILPTO web site, the claims of the Israel application must be of a scope which is identical to or narrower than that of the claims allowed by the USPTO. (This is the same requirement in place today under section 17(c) of the IL patent statute for acceptance of an application on the basis of allowance of a corresponding application in certain other countries. Note that the English instructions use the word “similar” rather than the word “identical”, which appears in the Hebrew explanation; presumably the Hebrew is in this case more reflective of the ILPTO’s intention.) Presumably, if one’s IL application doesn’t meet this requirement, an amendment may be filed concomitantly with the PPH request in order for the application to comply.

Second, a fee will be required; this is in contrast to applications utilizing the PPH in the USA, where no fee is required. And one may only request PPH status before examination of the Israel application has commenced. It’s not clear if the pre-examination request for additional information that the ILPTO sends before beginning substantive examination counts in this regard; the sensible thing would be for it not to count. Certain documentation will also need to be provided.

Thus, for applicants for whom Israel is the country of second filing, the present PPH program effectively amounts to a speeded-up version of the existing provisions under section 17(c) of the statute; the PPH merely provides an additional way to accelerate examination in Israel, beyond the currently accepted reasons for accelerating examination (e.g. potential infringement, imminent commercialization of the invention, etc.). It therefore appears that applicants for whom the USA is the country of second filing (i.e. who file first in the ILPTO) get the better end of the deal: as has mentioned in a previous post, as of January 1, 2011, an applicant who first files in Israel can have his application examined in accelerated fashion without paying an extra fee, and obtain a substantive office action within three months. Assuming allowance can be gained quickly in Israel, that applicant can use the quick allowance in Israel to obtain PPH status – at no extra cost – for a corresponding application in the much larger and more commercially significant U.S. market.

Although bilateral PPH is not as significant as PCT-PPH, it is a step in the right direction for the ILPTO, and new Commissioner Asa Kling and his staff are to be commended for completing this arrangement less than two months into his term. If Israel succeeds in becoming a PCT search and examination authority, it would stand to reason that Israel will also conclude a PCT-PPH agreement with the USPTO, which would truly be a boon for Israel-based applicants.

The form used for requesting PPH in the ILPTO does raise at least one important question, however: it’s sufficient for PPH applicants to direct the ILPTO to the allowed claims on the USPTO’s public PAIR, instead of supplying a hard copy themselves. That means the ILPTO staff is competent enough to make its way through public PAIR. If that’s the case, why are patent applicants in Israel still required to provide copies of prior art patent publications that can be downloaded from various sites on the internet just as easily as allowed US claims can be downloaded by the ILPTO staff from PAIR?

November 30, 2010

This morning, during my daily check of correspondence from the USPTO on private PAIR, I found a fascinating letter, the text of which is reprinted below. Turns out that the USPTO goofed, and enabled some patent application data to become publicly available on November 11 when that data wasn’t supposed to become available until November 18. The data wasn’t actually posted on PAIR; it was posted on a third party web site, then removed on November 15 and reposted on November 18, when it also became available on PAIR.

As the USPTO notes, the number of applications affected by the error is likely quite small, and the effect will be limited to corresponding applications filed outside the USA from November 11 through November 17 without a priority claim to the erroneously disclosed application. Personally, I’m curious if ANY foreign applications were or will be adversely affected by the premature disclosure.

What is impressive is that the USPTO came clean regarding its mistake relatively quickly: it seems that it only took about two weeks from the time the USPTO discovered the mistake to the time it mailed letters to all 6015 affected applicants, including the Thanksgiving hiatus. (A random sampling of the PAIR records for several of those applications indicates that all the letters were mailed November 30.) The USPTO could have stayed silent about this; had it not said anything, this story might have stayed buried for a long time, if not permanently. Hat tip to Commissioner David Kappos and his staff for this one.

The text of the letter sent to affected applicants is as follows:

Notice of Erroneous Early Release of Patent Application Information on November 11, 2010

On November 11, 2010, the United States Patent and Trademark Office (USPTO), unintentionally and as a result of a processing error, made available to subscribers of patent application data the patent application publications that were not scheduled to publish under 35 U.S.C. 122(b) until November 18, 2010. The USPTO's subscription service allows a member of the public to obtain copies of all patents or application publications from the USPTO on the date of grant or publication for a fee. One subscriber who had access to the early-published data made these premature patent application publications available on its free Web service, known as Free Patents Online, on November 11, 2010 - one week prior to the scheduled publication date. At the USPTO's request, the subscriber removed access to the patent application publications dated November 18, 2010 on November 15, 2010 until November 18, 2010. While the premature release of application information on November 11, 2010, is not considered a publication of such applications under 35 U.S.c. 122(b), the USPTO acknowledges that there are potential international ramifications in certain very limited circumstances such as where an applicant whose application information was released early did not file a foreign application within the Paris Convention priority period but did file in a foreign country between November 11, 2010 and November 18,2010.

The USPTO did not post the publications on its Web site until November 18,2010, and it did not provide access to the public Patent Application Information Retrieval (PAIR) System based on the early release of the publication data. Moreover, the USPTO did not record in its records that a publication occurred until November 18, 2010. Copies of, and access to, any of the affected applications described in this document were not provided by the USPTO under 37 CFR 1.14 based on the error described in this document. The USPTO regrets this error and is instituting controls to prevent similar processing errors in the future.

November 28, 2010

Although the notion of a meal of thanks is well enshrined in Jewish tradition, Thanksgiving is a distinctly American holiday. Nevertheless, over the weekend the Israel PTO gave Israel patent applicants something to (hopefully) be thankful for.

Seasoned U.S. patent practitioners will recall a time when an applicant who wished to have his application examined on an expedited basis could file a “petition to make special” on several grounds. In 2006 this practice was changed, so that the only remaining grounds for filing a petition to make special are the inventor’s age or health or under the Patent Prosecution Highway. See MPEP 708.02. Otherwise, the petition to make special program was supplanted by the accelerated examination program (MPEP 708.02(a)). While the latter program has been more successful than its predecessor in speeding up the examination of subject applications, its requirements are much more onerous, as the applicant must conduct a rigorous prior art search before filing and essentially prepare the first Office Action for the Examiner.

The comparable program in Israel can be found in Regulation 35(a) of the Patents Regulations, which enables applicants having good reason to petition the Commissioner to expedite the examination of his application. Typically such requests are based on concerns about possible infringement by a competitor and/or the imminent launch by the applicant of a product intended to covered by the claims of the patent application.

The Israel PTO has now announced that as of January 1, 2011, applicants who have filed an application in Israel and who plan file foreign applications claiming priority from that Israel application may request expedited examination on this basis alone. The catch is that as part of the request, applicants must file a declaration stating that the Israel application is “the first one filed on the invention”; presumably what the ILPTO means is that the Israel application is the first one filed anywhere in a Paris Convention country on the claimed invention. In exchange, the ILPTO promises to deliver a “comprehensive” examination report within three months of the approval of the request for expedited examination. Unfortunately, the report will be delivered in Hebrew, although apparently if the applicant so requests, the ILPTO will prepare an English version of the examination report for consideration by the PCT search authority per PCT Rule 4.12.

If, as expected, Israel and the USA sign a Patent Prosecution Highway (PPH) agreement, then the newly-announced policy for expedited examination would make the use of the PPH easier for Israeli applicants, since they would be able to file first in Israel and obtain an examination report during the priority year. Presently the combined filing and initial publication for an Israel patent application is 1194 shekels (about 330 dollars), and the fee for requesting expedited examination is 685 shekels (about 185 dollars). For applicants wishing to obtain a U.S. patent quickly, this is small price to pay to be able to take advantage of the PPH, especially compared to the cost of accelerated examination when search and attorney fees are taken into account. It will also be less costly and faster than utilizing the PCT-PPH route by first filing a provisional application, then using the EPO as the PCT search authority.

Moreover, it does not appear that applicants wishing to take advantage of this new form of expedited examination in Israel would be precluded from filing the same application as a U.S. provisional application on the same day or shortly after the application is filed in Israel (provided that their invention is not a defense technology-related invention, the foreign filing of which is statutorily prohibited).

The big question is whether or not the ILPTO is really capable of providing a “comprehensive” examination report in every case of expedited examination. As I noted in a previous post, some Israeli examiners do a first-rate job, finding the most relevant art and clearly explaining its applicability to the patentability of all pending claims; but other examiners don’t find the best art, and/or mis-apply the prior art they do find, and/or do a poor job of explaining how the art applies to the pending claims, and/or don’t explain how the art applies to each and every claim. If the ILPTO has developed a system for ensuring that all its examiners can provide first-rate examination reports, then this weekend’s announcement is a welcome one.

October 15, 2010

I usually leave it to other blogs to comment on recent U.S. court decisions. However, I thought that CAFC’s decision in Solvay v Honeywell International earlier this week nicely highlights some of the differences between U.S. and Israel patent practice, as well as at least one idiosyncrasy of U.S. patent law.

Solvay’s US 6,730,817 has an earliest priority date of October 23, 1995. The patent claims a process for making 1,1,1,3,3-pentafluoropropane (HFC-245fa). In 1994, Honeywell’s predecessor-in-interest, Allied Signal, entered into a research agreement with a Russian research center to develop a process for making this same compound. Research results from Russia were sent to Allied Signal in the USA in July 1994, in a report that both sides agreed disclosed the invention claimed by Solvay. In 1995, prior to Solvay’s priority date, Honeywell personnel in the USA repeated the Russian experiments, and throughout 1995 and 1996 continued to develop improvements to the Russian process (which eventually led to the issuance of a patent for Honeywell, although Honeywell’s patent was filed after Solvay’s).

Honeywell eventually began to practice its process in the USA, and Solvay sued for infringement. Given the facts above, one would think that Honeywell had an iron-clad invalidity defense: 35 U.S.C. §102(a) says in pertinent part that, “A person shall be entitled to a patent unless: (a) the invention was known or used by others in this country . . . before the invention thereof by the applicant for patent”. The Russian research report which disclosed the invention was in the possession of Allied Signal employees well before Solvay’s priority date, and those employees also practiced the invention in the USA before that date. That would seem to constitute knowledge or use in the USA (or both) by someone other than Allied Signal before Allied Signal invented its process.

Unfortunately for Honeywell, until the filing of its own patent application on its improved version of the Russian-developed process, Allied Signal had kept its knowledge and use secret. It is well-established caselaw that the “known or used” clause of §102(a) means public knowledge or use. See e.g. Rosaire v. Baroid Sales Division, National Lead Co., 218 F.2d 72 (5th Circuit 1955). Consequently, Honeywell couldn’t bring a defense under §102(a).

Lacking recourse to §102(a), Honeywell turned to 35 U.S.C. §102(g)(2), which states that a person is not entitled to a patent if “before the applicant’s invention thereof the invention was made in this country by another inventor who had not abandoned, suppressed or concealed it.” Honeywell argued that by practicing the Russian invention before Solvay’s priority date, Honeywell qualified as “another inventor” for purposes of §102(g)(2). (Prior to 1999, the statute read “the invention was made in this country by another . . . .”; as noted in footnote 3 of the Solvay decision, in Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001), the CAFC held that, under both the pre-1999 version of § 102(g)(2) and the current version of the statute . . . it must be shown that an “inventor” made the claimed invention in order to establish a first-inventor defense.)

The CAFC rejected this assertion: as it was the Russian scientists and engineers, not Allied Signal’s, who had conceived of the invention practiced by Allied Signal in 1995, Allied Signal’s employees were not inventors for purposes of §102(g)(2).

As a result, Honeywell was unable to invalidate the ‘817 patent on grounds of prior use.

Sitting in Rehovot, there are two aspects of this case that strike me as interesting. The first is that under the same fact pattern in Israel, the patent may have been invalidated for lack of novelty, and even if not, Honeywell likely would still have had a prior use defense. In terms of validity, public use of a claimed invention anywhere in the world (not just in Israel) before an applicant/patentee’s priority date is a bar to patentability in Israel. Clearly the question of whether or not the practice of the invention, in both Russia and the U.S.A., constituted a prior public use under Israel law, would have been litigated, and I won’t speculate on how a court here would rule. But even if the patent wasn’t invalidated on those grounds, section 53 of the patent statute creates prior user rights:

53. Right by virtue of prior exploitation

Whoever on the determinative date was exploiting in good faith in Israel the invention for which a patent is requested, or who on that date made in good faith substantial preparations for its exploitation, is entitled to exploit the same invention himself and in the course of his business [operations] without consideration; for purposes of this matter, “the determinative date” [means] the date on which the patent application was applied for in Israel, and if a [Paris Convention] priority claim is made for that application under section 10 [of the statute], the date on which the priority application was filed.

On the priority date, Allied Signal had both practiced the invention and was making substantial preparations for its exploitation. Allied Signal would therefore presumably have benefited from section 53. Section 54 says that the rights under section 53 may only be transferred along with the business that uses the invention; as Honeywell took over Allied Signal’s HFC-245fa production business, presumably Honeywell would have been lawfully entitled to Allied Signal’s prior user rights in Israel.

The second point is that it is somewhat ironic that in the United States, for purposes of novelty-defeating prior use under §102(a), the prior use must be public, whereas under §102(e) the filing of a patent application can defeat both the novelty and the non-obvious of a later-filed application, even if the earlier application was not published at the time of the later filing. See e.g. In re Giacomini. Put differently, to be effective prior art in the U.S.A., prior use must be public, unless it has the hechsher of an earlier-filed U.S. patent application. Thus, had Allied-Signal applied for a patent in July 1995 – a time at which U.S. patent applications remained secret until their grant, and not long after provisional patent applications became an option – on the Russian process, then this application would have been invalidating “secret” prior art to Solvay’s patent application, and Honeywell would never have had to contend with Solvay’s patent.

October 05, 2010

Earlier today I posted about a notice circulated by the ILPTO in response to the USPTO’s decision not to recognize the priority claim of a PCT application filed at the Israel Receiving Office more than a year after the priority US provisional application was filed. An interesting aspect of that notice that I didn’t discuss in the earlier post was the apparent failure of the ILPTO to grasp the limited scope of the USPTO’s position. Although the notice can be downloaded here, for those who don’t read Hebrew the following is a translation of the notice; pay careful attention to the second paragraph:

1. Recently a decision was given by the U.S. Patent Office on July 28, 2010 regarding a PCT application filed in Israel. Attached is the decision for your review, following redaction of the detils that identify the applicant.

2. According to the decision, the USPTO will not recognize the priority claim if a PCT application is filed at the receiving office more than 12 months after the priority date, even if the “lateness” in filing the application was due days of rest, holidays and holy days on which the receiving office was closed.

3. This decision is based on section 119(e) and 363 of the U.S. patent statute (35 U.S.C. 119(e), 35 U.S.C. 363) and Article 8 of the PCT treaty [redundancy in the original – DJF].

4. I wish to clarify, that mail be submitted to our office until 24:00 of any work day of the [Israel Patent] Office. It is not possible to submit any documents to our Office on days on which the Office is closed, including Fridays, Shabbat [Saturday] eves of holidays and holidays and days on which an appropriate notice is given to the public.

Dr. Meir Noam, Commissioner

The notice implies that the USPTO will never grant a priority claim when the PCT application was filed more than year after the priority date. That’s not what the decision says. The decision says that the USPTO will not accord priority when (a) the priority application is a U.S. application, and (b) the PCT was filed more than year after the priority application was filed (c) on a day when the USPTO itself was open for business – although as noted in the previous post, it appears that not everyone at the USPTO who processes applications is aware of this.

Where the ILPTO got it wrong is that if the priority application is a non-U.S. application, and the RO was closed on the one-year anniversary, the USPTO may recognize the priority claim. Thus, in the present case, had the priority application been an Israel patent application filed on October 11, 2005, then the USPTO probably would have recognized the priority claim for the PCT filed at the ILRO on October 15, 2006, the first day after October 11, 2006 that the ILPTO was open. This is what happened in the case of US 7,700,057, which was filed as a national phase application of PCT/IL2006/001185, which itself was filed on October 15, 2006 claiming priority, inter alia, from two Israel patent applications filed on October 11, 2005. USSN 12/083,371, although since abandoned, was filed under similar circumstances and likewise accorded the priority date of the Israel application.

It’s not clear if the ILPTO understood this subtle distinction or not. It may be that the distinction was understood, and that paragraph 2 of the notice is just another example of the Commissioner’s lack of command of the written word (the earlier examples being the numerous times he sent out Circulars, only to have to subsequently send out one or more “clarifications” because he didn’t express himself clearly the first time). Or it may be that the ILPTO really misunderstood the USPTO’s decision, a sobering thought considering how often reference is made to U.S. case law during proceedings before the ILPTO.

Although in my original post on this topic, I suggested that the USPTO’s position runs contrary to the spirit of the PCT – a view I still hold – it has to be admitted that there’s a certain logic to the USPTO’s position: a PCT application is meant to replace a spate of national filings within the one-year Paris Convention priority deadline. Here, if instead of filing a PCT, the applicant had chosen to file only in the USA, then clearly the U.S non-provisional application would have to have been filed by the one-year anniversary of the U.S. provisional application (or the next day on which the USPTO was open), in accordance with U.S. law. PCT Article 8 addresses this situation in a straightforward manner: insofar as a priority claim is concerned, the effect of that priority claim in the jurisdiction in which the priority application was filed is governed by the local law of that jurisdiction.

What’s frustrating for non-U.S. applicants is that because of both the low cost of filing a provisional, and the fact that a provisional obtains a §102(e) date (as both a sword and a shield, see the recent In re Giacomini decision on this point), many non-U.S. applicants use provisionals as their priority applications. Since those same applicants cannot avail themselves of the USPTO as PCT RO (although as the petition decision point out, under PCT Rule 19.4, they could also file at the USRO which would transmit the application to the IB), they’re stuck with using their local office or the IB for filing their PCT application. And lulled into a false sense of security by PCT Rule 80.5, they get bitten when they discover that the USPTO won’t recognize their priority claim.

I wouldn’t go so far to say that Israeli PCT applicants who file their priority applications in Israel can sleep tight when the one-year deadline for filing their PCT application falls on a date when the ILPTO is closed. While it would make sense for the USPTO and other national patent offices to honor such ostensibly late priority claims – in order for an international treaty like the PCT to work, some accommodation for local differences in workweeks, holidays and the like needs to be made – prudence dictates that the one-year Paris convention deadline be treated as fixed, so that if the deadline falls when the ILPTO is closed, the PCT should be filed at the ILRO before that date (or at the IB). Perhaps this is what the Commissioner was trying to say in yesterday’s notice.

[Revised October 5, 2010, about 12 hours after the initial posting. Thanks to Dr. Richard Korn of Potter Clarkson in the UK for catching the obvious - the provisional application number that wasn't redacted from the document sent out by the ILPTO. That's what I get for blogging after midnight.]

At the end of last year I posted about the plight of an Israeli PCT applicant for whom the USPTO refused to accord priority from his earlier US provisional application. The provisional was filed on October 11, 2005, but the one-year anniversary this date fell on a day on which the Israel PTO was closed, so the applicant filed its PCT at the ILPTO/RO on the next day that the ILPTO was open, viz. October 15, 2006. The catch was that the USPTO was open on October 11, 2006, as was the PCT International Bureau. So upon entry into the national phase in the USA, the USPTO adopted the view that the provisional had expired on the one-year anniversary, and therefore the applicant lost the benefit of that US provisional application.

Subsequent to that post, in February of this year the applicant petitioned the USPTO to accord priority from the provisional. In August the USPTO issued a decision on the petition, in which it again said, “Sorry, Charlie”. That’s not the interesting part of the story. What’s interesting is that this tale has been making the rounds in the community of Israel patent practitioners for some time, but only yesterday did the ILPTO send out the attached notice warning practitioners about this potential problem, along with a copy of the petition decision in which identifying information was redacted. (Click here to download a copy of the redacted petition decision; click here here for the unredacted petition decision.) So while the Commissioner is to be commended for publicizing this issue, one wonders what took him so long to notice there’s a problem and/or to only now see fit to warn Israel practitioners of this potential pitfall.

Even more interesting is the fact that the USPTO itself is inconsistent in its application of the U.S. patent statute and the PCT. The application in question, Yissum’s PCT/IL2006/001187 (published as WO 2007/043057; the US national phase application is USSN 12/078,317 - see the filing receipt - and the provisional application number is 60/724,904) isn’t the only one having a provisional filing date of October 11, 2005 and a PCT filing date in the ILRO of October 15, 2006. There are three others that fit that bill. But this is the only one of the four in which the USPTO refused to recognize the priority claim.

Thus, for example, PCT/IL2006/001179, published as WO 2007/043051, also claims priority to a US provisional filed on October 11, 2005, and was filed at the ILRO on October 15, 2006. But in this case, the USPTO accorded the priority claim for that national phase application, USSN 12/089,421: the filing receipt reflects the priority claim to USSN 60/724,875, and the published patent, US 7,795,887, even shows the priority claim on its front page. Similarly, the filing receipt for USSN 12/088,896, the national phase application of PCT/IL2006/001176 (published as WO 2007/043049), which was filed at the ILRO on October 15, 2006, shows the priority claim to USSN 60/724,794, which was filed on October 11, 2005. And the same is true of PCT/IL2006/001174 (published as WO 2007/043048), filed at the ILRO on October 15, 2006: the filing receipt for the national phase USSN 12/083,222 shows the priority claim to USSN 60/724,790, filed October 11, 2005.

I don’t know if Yissum plans to request reconsideration of its petition and to eventually appeal to the courts. If the USPTO’s position with regard to Yissum’s application is ultimately upheld as being correct, then the putative granting of the priority claims in the other three cases is erroneous, and those applications are not entitled to the priority claims. Conversely, if the USPTO’s position is wrong – a distinct possibility, given its recognition of the priority claims in three other applications in identical circumstances – why is the USPTO hassling Yissum?